Passing off’ is what’s known as a common law action. In other words, it is a development of the courts. The reason passing off developed was to protect the reputation and goodwill of a business that stems from use of a particular business name or trademark attached to a service or product. If another business is using your business’ intellectual property, seek the advice of an intellectual property lawyer about how to take legal action against them.

What are the necessary elements to a passing off action?

For an action in passing off to be successful, it must meet the following requirements:

  • There must be some sort of misrepresentation, such as another business pretending to sell your brand;
  • The misrepresentation must be made ‘in the course of trade’ and by a trader, meaning the misrepresentation must be commercial in nature;
  • The misrepresentation must be made to potential clients of your business, i.e. customers who may potentially purchase your products or services;
  • The misrepresentation must intend to damage the reputation or business of another trader; and
  • The misrepresentation must cause actual damage to your business.

What are the different types of passing off?

There are several different branches of passing off that should be clarified.

The first is a misrepresentation that one trader’s product is that of another trader. For example, you might sell Rexona deodorant and another trader might also claim to sell Rexona when in reality it is an inferior replica.

The next type of misrepresentation involves selling goods claimed to be of a particular quality or class. For example, you might claim that your products are ‘Australian Made’ by using the trademark logo of a yellow kangaroo inside a green triangle. If this isn’t true, you could face a passing off action brought against you by the company or organisation that own the symbol.

Claiming to have an affiliation, association, sponsorship, or some other connection or relationship to another business might also be grounds for an action in passing off. For example, you might sell a new type of Cola and decide to use Coca-Cola’s branding on your packaging in order to suggest that they are affiliated with your business. If you’re not careful, this kind of conduct can land you in deep water, so speak with an intellectual property lawyer to avoid facing expensive litigation and damages.

Finally, using an image of a character or real person to persuade consumers into assuming that there is some affiliation or sponsorship between the product and the person/character is also not allowed. For example, you might use a television presenter’s face on your skin product. This may give consumers the false impression that he or she endorses your product in some way or another.

Conclusion

In summary, passing off involves a misrepresentation being made in the course of trade that may have the effect of misleading consumers into buying a product or service that they believe is associated with another trader’s brand or image.

If you believe someone is passing off their products as your own, or selling your products and passing them off as their own products, take legal action and speak with one of our intellectual property lawyers.

In the same vein, if you yourself are taking advantage of another trader’s brand, get legal advice on how you can avoid being sued for passing off. Call us on 1300 544 755 or fill out the form on this page.

Lachlan McKnight

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